Raghubar Dayal, J.
1. Kundan Lal Agarwal and Badri Prasad have applied in revision against the dismissal of their appeal by the IInd Civil and Sessions Judge, Luck-now, against their conviction for offences under Sections 482 and 486 of the Indian Penal Code.
2. Kundan Lal is the proprietor and Badri prasad, an employee of the firm from whose premises were recovered certain quantities of soap with labels "Sumbright", "Sumlight", "Sunleght" "Lillyboy" on a search on 19-5-1953. It has been held by the courts below that the manufacturers have counterfeited the trade marks of Lever Brothers with respect to the name and the label of "Sunlight" soap and "lifebuoy" soap and that the applicants committed the offences under Sections 482 and 486, I. P. C., because they used goods with false mark and had in their possession goods with counterfeit marks. The courts below did not agree with the contention that the case of the accused came under any of the Clauses (a), (b) and (c) of Section 486, I. P. C.
3. This revision first came up for hearing before a learned single Judge of this Court who was not in agreement with the interpretation of law made by Gopaljj Mehrotra, J., in Hafiz Mohd. Ismail v. The State, Cri Revn. No. 116 of 1955, D/-17-3-1956 (All) (A), & referred the case for decision to a Division Bench. The applicant in that case was also convicted for offences under Sections 482 and 486, I. P. C., in connection with the recovery of "sumbright", "sunolight" and "Lilly-boy" soaps.
It was held by this Court that the applicant in that case did not commit an offence under Section 482, I. P. C., because mere possession did not amount to the using of goods marked with false trade marks and was also not guilty under Section 486, I. P. C., as he was not in possession of goods with a counterfeit trade mark but of goods which were colourable imitations of the genuine trade mark.
4. On a comparison of the label of the genuine Sunlight soap with those of "Sumbright" soap, 'Sumlight" soap and "Sunleght" soap we are of opinion that an unwary purchaser may be deceived if he be handed over any of the soaps other than the Sunlight soap when he wanted to purchase the Sunlight soap in spite of certain differences in the name, the letters, the picture and tile colour scheme. This, however, cannot be said with respect to the purchaser of Lifebuoy soap. The label of the Lilliboy soap is markedly different from that of Lifebuoy.
One chief difference is that the Lifebuoy has the Picture of a sailor holding a lifebelt in the raised right hand, the picture itself being on the left hand bottom corner while the picture on the Lillyboy is of a female holding a flower in the raised left hand. The picture itself is in the right hand bottom corner. This change in the position of the picture has led to a change in the position of the word 'Soap' and of the expressions for saving life and 'for preservation of health' in the top and bottom portions of the Z life form in the centre. These are on the right hand side of the lower half of the genuine Lifebuoy label but are on the left hand side in the label of the Lillyboy.
Apart from these differences in the appearance of the label the cake of the Lillyboy is much smaller than the cake of the Lifebuoy. The size of the Lifebuoy cake is about 2.8" x 2.2" x 1.3". The size of the Lillyboy cake is about 2.7" x 2.1" x 1". An unwary purchaser is, therefore, not likely to be deceived if he be handed over the Lillyboy soap in place of the Lifebuoy.
5. We agree with the view of Gopalji Mehrotra, J., in Criminal Revision No. 118 of 1955 to the effect that persons who stock goods wrapped in wrappers bearing marks which can be said to be a colourable imitation of genuine marks could not be held to have used any false trade mark or any false property mark within the meaning of Section 482, I. P. C. The expression "using a false trade mark" is defined in Section 480 thus :
"Whoever marks any goods or any case, package or other receptacle containing goods, or uses any case, package or other receptacle with any mark thereon, in a manner reasonably calculated to cause it to be believed that the goods so marked, or any goods contained in any such receptacle bo marked, have a connection in the course of trade with a person with whom they have not any such connection, is said to use a false trade mark."
This section makes two classes of persons users of a false trade mark. One class is of those who actually mark any goods or any case, package or other receptacle containing goods in a manner reasonably calculated to cause it to be believed that the goods so marked, or any goods contained in any such receptacle so marked had a connection in the course of trade with a person with whom they had not any such connection. A person stocking goods or packages so marked is not amongst such persons as he himself does not make such marks.
The other class consists of persons who use any case, package or other receptacle with any mark thereon in the aforesaid manner. The mere possession of any such article with any mark is not using such property. The using of such a package implies doing something with it in such a manner as to create a certain type of belief in another person. It follows, therefore, that some-thing is actually to be done by a person before he can be said to have used it. Mere possession in our opinion, therefore does not amount to using such property in the manner contemplated by Section 480, I. P. C. We are, therefore, of the opinion that the applicants have not committed any offence under Section 482, I. P. C.
6. The conviction of the applicants under Section 486, I. P. C., raises two questions one is whether they exposed or had in their possession for sale these soaps and the second is whether the labels on the wrappers containing the soap cakes had counterfeit trade marks. The accused admit that the soaps recovered from their shop were for sale. It is, however, contended that the labels on the wrappers are not counterfeit trade mark.
It is further contended that the applicants have brought their case within Clauses (a), (b) and (c) of Section 486 and that, they have not, therefore committed any offence under Section 486, I. P. C. We are in agreement with the courts below that the accused have failed to prove what is required to be proved by Clauses (a) and (c) of Section 486 even if what information they conveyed to the prosecutor amounted to the conveying of all the information in their power with respect to the persons from whom they obtained such goods or things.
If these labels are counterfeit trade marks there is nothing to suggest on behalf of the applicants that they had no reason to suspect the genuineness of the mark at the time of the commission of the alleged offence in spite of all reasonable precautions taken by them. Their case is that the labels are quite different from those of the Sunlight soap and that when they obtained these goods they fully knew that they were not the Sunlight soap cakes but were the soaps with the names noted on the labels. No such circumstance is shown which would have proved that they had acted innocently.
7. We are, however, of opinion that the labels cannot be said to be counterfeit of the genuine trade mark of Lever Brothers which is registered in the name of Sunlight and in the get up of the label. Their trade mark numbers are 87,099 and 1,26,246 according to the deposition of N. V. Peter (P. W. 1).
8. It has been held in some cases that a person is said to counterfeit a trade mark of another when he makes one thing such as would deceive another into believing that thing to be the other thing and that, therefore, the eye is the best Judge to determine whether a disputed article was a counterfeit of the genuine article or rot. The eye is merely to judge whether an unwary purchaser would be deceived on account of the general impression which he carries of the genuine article in believing the disputed article to be the genuine article irrespective of the fact that there be some differences in the two articles.
Another view which is the basis of decision in some cases though not expressed in such form is that the disputed article can be said to be a counterfeit of the genuine when it purports to be the genuine article though it may not be an exact copy of the genuine article. We are inclined to agree with this view.
9. The expression "counterfeit" is defined in Section 28 of the Indian Penal Code thus :--
"A person is said to 'counterfeit' who causes one thing to resemble another thing, intending by means of that resemblance to practise deception or knowing it to be likely that deception will thereby be practised.
"Explanation 1. -- It is not essential to counterfeiting that the imitation should be exact.
Explanation 2. -- When a person causes one thing to resemble another thing and the resemblance is such that a person might be deceived thereby, it shall be presumed, until the contrary is proved that the person so causing, the one thing to resemble the other thing intended by means of that resemblance to practise deception or know it to be likely that deception would thereby be practised."
The second explanation does not assist us in determining what article can be said to be counterfeit of another, it only provides for the raising of a presumption with respect to the intention of the person alleged to have counterfeited an article. The key word in the definition seems to us the word "to resemble". This word, according to the Concise Oxford Dictionary, means "Be like, have similarity to or features in common with or same appearance as (another)."
The word "similar", according to the same Dictionary, means "like, alike, having mutual resemblance or resemblance to, of the same kind" and the word "same" means "Monotonous, uniform, unvarying". One thing cannot, therefore, be said to resemble another merely because an unintelligent or a careless and unwary purchaser may mistake one article for another. It is the mistake of the purchaser that he considers one article to be another.
10. The first Explanation provides that the imitation need not be exact. The word "imitation" according to the Concise Oxford Dictionary, means "Copy; counterfeit" and the word "Copy" means Reproduction (of writing, picture etc.). The use of the word "imitation" in the Explanation supports this view. A counterfeit article is supposed to be an imitation of the genuine article. It is to be its copy which means that it should be a reproduction of the genuine article not by the original producer who will undoubtedly produce genuine article but by some other producer.
What the Explanation, therefore, means is not that any differences between the genuine and the alleged counterfeit article can be ignored if those differences do not help the unwary purchaser to detect that the article he is getting is not the genuine article but is that the natural impressions between an imitation and the original due to different workmanship and different instruments can be ignored.
This is reasonable a copy prepared by a person other than the original producer is bound to be different though the one prepared by an expert may differ very little while the one Prepared by a person who is not an expert may differ in greater detail. The essence of a counterfeit, however, must be that the alleged counterfeit article should be an imitation of the genuine article.
11. Clause (a) of Section 486, I. P. C. requires the accused to prove, if he can that he had taken all reasonable precautions against committing an offence against Section 486, I. P. C. and yet he had at the time of the commission of the alleged offence no reason to suspect the genuineness of the mark. A person accused of an offence under Section 486 is a dealer who sells or exposes or has in his possession for sale or any purpose of trade or manufacture any such counterfeit article.
He will not be classed amongst the unwary purchasers. He is expected to know fully the genuine trade mark of the article he deals in. A trade mark which can deceive an unwary purchaser cannot be expected to deceive a dealer in the genuine article. It would, therefore, be difficult for such a dealer even to claim that when he obtained possession of the alleged counterfeit articles he had no reason to suspect the genuineness of the mark.
For instance, nobody will be prepared to believe for a moment that Kundan Lal would not have known when he purchased the ''sumlight", "sumbright" and "Sunleght" soaps that they were not genuine sunlight soaps. It cannot be imagined that the law would require an accused to prove something which on the face of it is never likely to be proved. Clause (a) requires an accused to prove that at a certain relevant time he had no reason to suspect the genuineness of the mark, that is to say, he had no reason to suspect that the trade marks on the alleged counterfeit article were not genuine trade marks of the genuine article. Clause (a) must refer to the genuineness of the mark with respect to the original mark which is alleged to have been marked or impressed on the goods in possession of the accused for sale or other purpose mentioned in Section 486, I. P. C.
12. In view of these three considerations mentioned earlier, we are of opinion that a counterfeit trade mark would be a trade mark which purports to be a genuine trade mark but is in reality not so and that it would so purport only when it is a copy of the other though not an absolutely exact copy in every detail. It seems to be due to such consideration that the expression "colourable imitation" has been used with respect to certain alleged counterfeit marks in some cases and those marks had not been held to be counterfeit trade marks.
A mark can be said to be a colourable imitation of another mark when it is not really an imitation of any other mark but just appears to be so and can pass off as such. The soaps recovered from the possession of the accused do not purport to be Sunlight soaps. The labels have different names. The labels do not repeat all what is written or printed on the genuine label of the Sunlight soap. The labels in suit are therefore colourable imitation of the genuine labels of Sunlight soap and are not counterfeit.
13. I may now refer to the cases of this Court which have a bearing on the question under consideration:
14. In Roshan Singh v. Emperor, AIR 1941 All 37 (B), Ismail, J. in considering the question whether a person could be convicted of both the offences under Sections 482 and 486 observed at page 90 :--
"The distinction between false trade mark and counterfeit trade mark is somewhat subtle. In my opinion it depends on the degree of resemblance between the false and genuine trade marks.''
He further quoted from Lokumal v. Emperor, 16 Cri LJ 230 : (AIR 1914 Sind 163) (C), the quotation being :--
"A counterfeit is strictly an exact imitation but for purposes of the Penal Code it is not essential that imitations should be exact. But a thing is not ordinarily said to be counterfeit unless it bears on the face of it the semblance of validity and is such as to deceive the average person on ordinary observation. Having regard to the patent differences between Ex. 4 and Ex. 5, differences which would be obvious on ordinary observation even to an unintelligent person who could read either Gujarati or English, and unless he could read on the languages the inscription would convey nothing at all. The conviction under Section 486 cannot in our opinion stand. It is a case of using a false trade mark, not a counterfeit one."
Ismail J., observed in continuation :--
"I have already pointed out that the trade mark exhibited on the soap of the applicant bears very strong resemblance to that on the complainant's soap out the trade marks are not identical. If the two soaps are put side by side a literate man will not find any difficulty in noticing the difference, but a purchaser who trusts to his memory may well be led to believe that the applicant's soap was manufactured by the complainant firm."
After considering certain cases Ismail, J. finally observed at page 91 :--
"Applying the principles enunciated above, I have to determine whether the applicant has used a false trade mark or has sold goods with a counterfeit trade mark. I have no hesitation in holding that in the present case the applicant cannot be convicted under Section 486, I. P. C. It is impossible to say that the No. 301 is a counterfeit of No. 501, nor can it be said that 'India' is a counterfeit of 'Tomco'.
It is true that the imitation need not be exact but there should be close resemblance to constitute an offence under this section. Agreeing with the principle laid down in 16 Cri LJ 230 at p. 231: (AIR 1914 Sind 163 at p. 164) (C), I hold that the applicant is not guilty under Section 486, Penal Code."
We consider this case to support our view fully. The principle laid down in Lokumal's case 16 Cri LJ 230 : AIR 1.914 Sind 163) (C), was that the counterfeit must bear on the face of it the semblance of validity, i.e. the counterfeit must purport on the face of it to be the genuine article. Ismail, J.'s remarks about the trade mark being not identical, that No. 301 was not a counterfeit of No. 501 and that India was not a counterfeit of Tomco can only mean that the counterfeit trade mark and the genuine trade mark must purport to be identical though the counterfeit may not be an exact copy of the genuine mark. This, to our mind, as already mentioned, does not mean that the inexactness may be due to differences, but refers to such inexactness which, must naturally creep in, in a non-genuine article or mark.
15. In Beli Ram v. The State, Cri. Revn. No. 1670 of 1953, decided by James, J. on 6-5-1955 (D), Beli Ram's conviction for offences under Sections 482, 483, 485 and 486, I. P. C. was confirmed. He was found in possession of a number of cakes of soaps resembling those manufactured by Lever Brothers under the names of "Sunlight" "Lifebuoy" and "Lux" and of a large number of labels under the titles "Sunleght", Lifeboy" and "Lax". The trial court found that Beli Ram had sold the goods with counterfeit trade marks.
This finding was confirmed by the Sessions Judge before whom it was not questioned. The only contention raised before James, J. was that the courts could rely only on evidence to prove that the goods of the applicant resembled the goods of the firm so closely that an ordinary purchaser was likely to be deceived into mistaking the former for the latter and that the courts were not justified in reaching a conclusion by making a comparison between the two goods themselves.
This contention was repelled. No occasion arose in this case to consider whether the label under the title of "Sunlight" was a counterfeit label. The finding on that question was not challenged by that applicant even in his appeal against his conviction.
16. The nest case is Haveli Ram v. The State. AIR 1956 All 132 (E). Haveli Ram applicant in that case was convicted under Section 486 I. P. C. and had been acquitted of the offence under Ss. 482 and 483 I. P. C. He had been found in possession of a number of cakes of soap marked with the imprint of "Sunlight" soap with wrappers of the same description and three dozen cakes of soap with the imprint and wrapper of "Lifebuoy" soap along with two cakes of genuine "Sunlight" soap.
Here the soap cakes and the wrappers did have the imprint of "Sunlight" and "Lifebuoy" and the wrappers also had a similar description. Obviously those cakes and wrappers purported to be the genuine soaps and wrappers. The courts below, however, found that the imprint and the wrappers were colourable imitation of the genuine soap manufactured by Lever Brothers (India) Limited and on this finding held that the offence made out was under Section 486, I. P. C. and not Under Section 482 or 483, I. P. C. Roy, J. however, was of the opinion that the facts and circumstances of the case and evidence on the record established an offence under Section 480, I. P. C. punishable under Section 482, I. P. C. Earlier he had observed:--
"It has been argued that since in the present case the allegation is not of counterfeiting a trademark or property mark, the case could not come within the four corners of Section 486, I. P. C. Section 486, I. P. C. refers to counterfeiting a trademark or property mark. The present case is not a case of counterfeiting. Here it was a colourable imitation of the trade-mark or property mark of genuine "Sunlight" and Lifebuoy soap manufactured by Messrs. Lever Brothers, Ltd. Consequently Section 486, I. P. C. was not in my opinion properly applied to the case."
If the actual impressing of the word "Sunlight" and "Lifebuoy" on the cakes of soap and on the wrappers merely amounts to a colourable imitation of the genuine trade mark the present case where the name noted on the wrappers is not even "Sunlight" but is a different one must necessarily be not a case under Section 486, I. P. C. This case, therefore, does not go against the view expressed above.
17. In Criminal Revision No. 118 of 1955, D/-13-7-1956 (All LB) (A), toy Gopalji Mehrotra, J., which related to the applicant possessing soaps under the name of "Sumbright", "Sunolight" and "Lifeboy", he observed :--
"There is a distinction between a false trade mark and a counterfeit trade mark. In the ultimate analysis the distinction may be subtle only to a degree, but nonetheless there is a distinction between the two. Every colourable imitation does not necessarily make the trade mark a counterfeit one."
He observed again :--
"It is not necessary that every counterfeit trade mark should in all details be similar to that of the genuine one. But the counterfeit necessarily implies an idea of a greater degree of similarity. It connotes an idea that the two trade marks should be identical in substance though there may be difference in minor details."
He further observed :--
"In my opinion with this difference in writings on those labels and human figures on them, they may be regarded as colourable imitaticns of the genuine trade mark, but cannot be regarded as counterfeit of the same."
18. The Allahabad view, therefore, has been consistently the same i.e. that a counterfeit mark is different from a mark which can be said to be a colourable imitation of the other and thus connotes an identity between the counterfeit mark and the genuine one though the imitation may not be exact.
19. Reference may also be made to other cases which support the other view mentioned above as to what amounts to counterfeiting an article.
20. In Emperor v. Tapidas Durlabhdas, 6 Cri LJ 75 (Bom) (F), the soap with the impressed words "Empress Pale" was held to be a counterfeit of the soap impressed with the words "Emperor pale". In coming to this conclusion Chandavarkar, J. referred to the observations in Johnston v. Orr Ewing (1882) 7 AC 219 (G), to the effect that "no trader has right to use a trademark so nearly resembling that of another trader as to be calculated to mislead incautious purchasers". This remark was made in a Civil matter and not in a case for prosecution in respect of counterfeit articles. One may not have a Civil right to use a trade mark resembling that of another and calculated to mislead unwary purchasers but that does not mean that a person using such a mark commits a criminal offence of selling counterfeit goods.
21. In Nilmoney Nag v. Durga Fada, 19 Cal. WN 957 : (AIR 1916 Cal 538) (H), the accused's boxes containing soap were considered On a comparison with the genuine box of the complainant's soap to be so similar in the general get-up, the size, the design, the lettering, the colour of the back ground the lettering on the starting portion of the two boxes that they were likely to be mistaken for the complainant's boxes.
The facts that the accused's boxes had a different name of the firm and had the word "Dantina" which did not exist on the complainant's boxes and that the cross-mark in circle which did not exist in the accused's boxes were considered not to make any material difference, it being considered to be the gist of the offence that the resemblance should be so great that one is apt to be mistaken for the other no reasons for the view are given in the judgment besides observing at page 959, "But apart from these two points of difference, the imitation of the whole design is most marked and complete."
22. Similar is the case reported in Faqir Chand v. The Crown, ILR 16 Lah 114 : (AIR 1934 Lah 687) (I). Reliance was placed in that case on the Bombay cases, Emperor v. Ganpat Sitaram 16 Bom L R 78 : (AIR 1914 Bom 128 (1) ) (J), Herbert Whiteworth Ltd. v. Jamnadas Nemchand, AIR 1928 Bom 227 (K) and Aswmy Kumar v. Emperor, AIR 1930 Cal 728 (L). The accused's Hair Dye was named "Arabic Horse Shining Black Hair Dye" in place of the complainant's named "Horse Brand Shining Black Hair Dye." The accused's design had a horse with a rider and had different colours while the complainant's had simply the figure of a horse.
23. In the first Bombay case, 16 Bom LR 78: (AIR 1914 Bom 128 (1) ) (J) relied upon, the following observations occur :
(1) "There is no doubt in our minds that the accused, the present appellant, has in fact used a false trade-mark."
(2) "It is urged that the conviction is for counterfeiting and that a counterfeit trade-mark is not at all the same thing as a false trade-mark which is defined in Section 480. It seems to us, however, that for the purposes of this case false trade-mark and counterfeit trade-mark are the same thing."
It is not clear from the report of the case why the accused's mark was considered to be a false mark. The head-note, however, indicates that the general get up of the labels of the tooth powder tins of two different manufacturers were almost identical. If they were identical though not exactly identical this case does not go against our view and does not really support the view taken in the Lahore case.
24. AIR 1928 Bom 227 (K) did not relate to an offence under Section 486, I. P. C. but to a Civil matter.
25. In AIR 1930 Cal 728 (L) a person was convicted under Section 486, I. P. C. for possessing for sale tins of corn-flour bearing a counterfeit trade-mart of Messrs. C. and E. Morton Ltd. He had used the mark "Matrons." The basis of the decision, was that the ordinary unwary purchaser could be deceived in spite of a large number of differences chiefly in detail. No other reason was given for holding that the accused's mark was a counterfeit mark.
26. A similar view was taken in Sri Narayan v. Mohammad Abu Saleh, AIR 1940 Cal 351 (M). Reliance was Placed on the case reported in Emperor v. Tapidas Durlabhdas, 6 Cri LJ 75 (Bom) (P) and Hecla Foundry Co. v. Walker Hunter & Co., (1889) 14 AC 550 (N) which was the case of infringement of copyright of the design.
27. In Local Government v. Moti Lal Jain, AIR 1937 Nag. 341 (O) the accused selling Dongre's Balamrit was convicted by the trial Court of selling it with a label which was held to be counterfeit of the label used for Dongre's Balamrit. The appellate Court acquitted him holding that the offending label was not a counterfeit of the original but was only a false trade mark. The Local Government appealed against the acquittal. It was held by the High Court that the offending wrapper was a counterfeit of the original as the object of the manufacture of Dongre's Balamrit was to deceive unwary purchasers into the belief that they were purchasing articles manufactured by K. T. Dongre and Company. It did not consider the differences in the two labels. It was observed,
"Now it is laid down in Section 28, I. P. C. that for the purposes of the Code the word 'counterfeit' does not connote an exact reproduction of the original counterfeited, and it follows that the difference between the counterfeit and the original is not limited to a difference existing only by reason of faulty reproduction."
With respect we are unable to agree.
28. A similar view was expressed in Noor Mahamad Haji Usman v. The State, AIR 1956 Bom 700 (P) though on fact it was held that the complainant had failed to establish that his label had been in existence for a long time as would have enabled the Court to hold that the label had acquired the reputation of a trade mark.
29. In Surja Prasad v. Mohabir Prosad, 11 Cal WN 887 (Q) the accused sold rose-water in bottles similar to those of the complainant and his bottles had labels similar to the labels On the complainant's bottles. It was held that he committed no offence under Section 486, I. P. C. as it was held that the labels appeared to be colourable imitation of the labels used by the complainant but on comparing the labels used by the accused with those of the complainant great differences appeared. This case was decided in 1907 and it was not referred to in 19 Cal WN 957 : (AIR 1916 Cal 538) (H) which was decided in 1915.
30. Lastly reference may be made to the notes of Gour's Penal Law of India, 4th Edition, Volume II, page 2552.
"And as there is not & there cannot be any rigid test as to the closeness of imitation, cases are not wanting in which a false trade-mark has been treated as a "Counterfeit" one entailing on the accused the penalty prescribed by this section. For instance, where the "complainant (A) had been for many years importing a certain cloth bearing a certain face plate and the number "K 68" and the accused were charged with having imported similar cloth bearing a somewhat similar face plate and the number "H 68" the Court held the latter to be undoubtedly a counterfeit of the complainant's symbol "K 68" and so rendering him liable to a conviction under this section."
Reference was to the case reported In Hargobind v. Ralli Brothers 35 Pun Re. 1902 (Cr.) (R).
31. In view of the above we are of opinion that no offence under Section 486, I. P. C. had been made out against the applicants.
32. In view of this opinion we need not discuss the other contention of the applicants about the Court's wrongly taking cognizance of the case on a police report which did not contain facts which could go to prove the offence. We agree with the view of the courts below that the trial is not vitiated on account of the omission or mention of the facts making out the offence against the accused.
33. In view of the above we are of opinion that this revision should be allowed. The conviction of the applicants is set aside and the applicants are acquitted of the offences under Sections 482 and 486, I. P. C. The fines if paid shall be refunded.